Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.
Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.
As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.
In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.
While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.
From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.
The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:
Designation of KENYA (in an international application or subsequent designation)
– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)
Where the mark is a collective or certification mark
– as above
Renewal of an international registration containing a designation of KENYA:
– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)
Where the mark is a collective or certification mark
– as above
IP Kenya 